Ex Parte Morrow et al

Patent Trial and Appeal Board

Jun 30, 2016

13038225 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/038,225 03/01/2011
40461 7590 06/30/2016
Law Offices of Edward S, Wright
1259 El Camino Real, No. 400
Menlo Park, CA 94025
FIRST NAMED INVENTOR
Danny Gene Morrow
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
A-75323 8398
EXAMINER
IGYARTO, CAROLYN
ART UNIT PAPER NUMBER
2884
MAILDATE DELIVERY MODE
06/30/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANNY GENE MORROW, LOUIS JOHN DIETZ,
and DARIUS AKBAR SADEGHI
Appeal2014-010008
Application 13/038,225
Technology Center 2800
Before JENNIFER L. McKEOWN, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1---6, 8, 10-23, 25, 27 and 29. Claims 7, 9, and 24
have been withdrawn and claims 26 and 28 have been indicated as including
allowable subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellants' invention generally relates to the detection of pesticides
and other analytes and, more particularly, to a portable, handheld instrument
Appeal2014-010008
Application 13/038,225
and method which are particularly suitable for detecting pesticides on
produce. Spec., p. 1, 11. 3-5.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A portable instrument for detecting an analyte on
a specimen, compnsmg:
a housing which is substantially impervious to light,
a cassette which carries the specimen and is removably
inserted into the housing, a light source within the housing
for directing light toward the specimen to induce
fluorescent emission from analyte on the specimen, a
detector with in the housing responsive to fluorescent
emissions having a spectral content characteristic of the
analyte to be detected, means for processing data from the
detector, and a display which is responsive to the
processed data and visible externally of the housing for
displaying information about the analyte on the specimen.
THE REJECTIONS
The Examiner rejected claims 1-5, 10, 13-21, 27, and 29 under
35 U.S.C. § 103(a) as unpatentable over Chuck et al. (US 2004/0199079 Al;
Oct. 7, 2004), Mark et al. (US 5,818,045; Oct. 6, 1998), and Smith (US
2010/0167306 Al; July 1, 2010). Final Act. 9-14. 1
The Examiner rejected claims 6, 8, 22, and 23 under
35 U.S.C. § 103(a) as unpatentable over Chuck, Mark, Smith, and
Shakespeare et al. (US 2007/0139735 Al; June 21, 2007). Final Act. 14--15.
1 Throughout this Opinion, we also refer to ( 1) the Final Office Action,
mailed Oct. 10, 2013 ("Final Act."); (2) the Appeal Brief, filed Apr. 8, 2014
("App. Br."); (3) the Examiner's Answer, mailed July 22, 2014 ("Ans.");
and (4) the Reply Brief, filed Sept. 22, 2014 ("Reply Br.").
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Application 13/038,225
The Examiner rejected claims 11, 12, and 25 under 35 U.S.C. § 103(a)
as being unpatentable over Chuck, Mark, Smith, and Xiao et al. (US
5,821,546; Oct. 13, 1998). Final Act. 15-16.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
"Any arguments or authorities not included in the briefs permitted under this
section or [37 C.F.R.] §§ 41.68 and 41.71 will be refused consideration by the
Board, unless good cause is shown." 37 C.F.R. § 41.67(c)(l)(vii).
THE OBVIOUSNESS REJECTION BASED ON CHUCK, MARK, AND SMITH
Claims 1-5, 10, 13, 15-21, 27, and 29
Based on the record before us, we are not persuaded the Examiner
erred in rejecting claims 1-5, 10, 13, 15-21, 27, and 29 as unpatentable over
Chuck, Mark, and Smith.
Appellants contend the Examiner's rejection "combine[s] selected
elements from three totally different references when there is no motivation
or basis for doing so in the references themselves, and [the Examiner] has
also mischaracterized the teachings of the references." Reply Br. 1; see also
App. Br. 9. Appellants also assert the Examiner relied on impermissible
hindsight reconstruction to support the combination of Chuck, Mark, and
Smith. App. Br. 8-9; Reply Br. 1-2.
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Application 13/038,225
We find these arguments unpersuasive. Each of Chuck, Mark, and
Smith are similarly directed to a spectroscopic system to measure the content
of a component within or on a specimen. See generally Chuck, Mark, and
Smith. Merely asserting these references are directed to "divergent areas"
and are "totally different," without persuasive support or reasoning is
insufficient to identify error in the Examiner's determination.
Appellants' conclusory challenge to the reasons to combine Chuck,
Mark, and Smith is equally unavailing. As the Examiner explains, Mark
generally teaches it is advantageous to have a spectroscopic system within a
housing, which is impervious to light. Ans. 4. We agree that it would have
been obvious to a skilled artisan at the time of the invention to modify
Chuck's system to include a housing for the benefit of reducing damage and
errors, as taught by Mark. Ans. 4. Appellants do not challenge the
Examiner's reasoning, but merely assert there is no motivation to combine
the references. See, e.g., App. Br. 9.
With respect to Smith, the Examiner finds Smith teaches it was well
known at the time of the invention to use a rigid cassette to hold a specimen
and insert the cassette into a housing of spectrometer system. Final Act. 10
(citing Smith i-f 16). The Examiner further explains there are limited number
of ways to holding and presenting a specimen in spectrometer systems. Ans.
5. Given there is a finite number of identified predictable solutions with a
reasonable expectation of success, it would have been obvious to try using a
cassette to present the specimen, as taught by Smith, in the Chuck's
spectrometer system. Ans. 4--5. Moreover, using a well-known technique,
i.e. using a rigid cassette to hold a specimen as taught by Smith, in the same
way in the similar spectrometer system of Chuck would have been an
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Application 13/038,225
obvious improvement. The Examiner, thus, sufficiently supports the legal
conclusion of obviousness with articulated reasoning with some rational
underpinning. See KSR Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Appellants remaining arguments are unavailing. Specifically,
Appellants make conclusory assertions without persuasive support or
reasoning as to why the Examiner's findings are insufficient. For example,
Appellants assert Chuck does not suggest the limitations of claim 13, namely
detecting the analyte in units of mass per unit area and converting the data
into mass ratio or concentration. App. Br. 9; see also App. Br. 11
(presenting a similar argument for claim 27). The Examiner, however, finds
Chuck teaches the detected fluorescence spectra, representing the analyte in
unit of mass per unit area, is used to determine "the concentration at which
the substance( s) of interest is/ are present in the material." Chuck Abstract.
Similarly, Appellants generally challenge the Examiner's findings of
the filtering light and filtering emissions limitations respectively recited in
claims 18 and 19 without addressing the Examiner's determinations for
these claims. Compare App. Br. 10, with Final Act. 6, 11. See also App.
Br. 10-11 (challenging the Examiner's reliance on Official Notice for claims
15 and 29 without adequately traversing the Examiner's findings (Final Act.
13-14) by pointing out, for example, why the noticed fact is not considered
to be common knowledge or well-known in the art). We agree with the
Examiner's findings with respect to these claims and adopt the Examiner's
findings as our own. See Final Act. 11-14; Ans. 5-8.
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Application 13/038,225
Accordingly, for the reasons discussed above and by the Examiner,
claims 1-5, 10, 13, 15-21, 27, and 29 are unpatentable over the cited
combination of prior art.
Claim 14
We are persuaded, however, that the Examiner erred in rejecting claim
14 as unpatentable. Specifically, the Examiner does not identify any
teaching of "wherein the means for converting from mass per unit area to
mass ratio or concentration includes means for multiplying the volume per
unit area of the specimen by the density of the specimen to determine the
mass per unit area of the specimen, and means for dividing the mass per unit
area of the analyte detected on the specimen by the mass per unit area of the
specimen to determine the mass ratio or concentration of the analyte and
specimen." See Final Act. 13; Ans. 5. Nor does the Examiner sufficiently
explain that the recited limitation would be an obvious variation of Chuck's
processing of data. Id.
While we recognize Church's computer would be capable of
performing the recited function, only identifying the structure of a means
plus function limitation is insufficient to establish that the prior art teaches
the claim limitation. See, e.g., MPEP § 2182 ("The application of a prior art
reference to a means- (or step-) plus-function limitation requires that the
prior art element perform the identical function specified in the claim.").
Accordingly, we determine that the Examiner fails to present a prima facie
case of obviousness for claim 14.
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Application 13/038,225
THE OBVIOUSNESS REJECTION BASED ON CHUCK, MARK, SMITH, AND
SHAKESPEARE
Claims 6, 8, 22, and 23
With respect to claims 6, 8, 22, and 23, Appellants assert Shakespeare
does not teach replacing a sample with a reference sample and calibrating
the system using the reference sample as recited in the claims because
Shakespeare is concerned with color measurements, not with detection of an
analyte on a specimen. App. Br. 11-12. Further, Appellants contend "there
is no suggestion of replacing sample 102 with a reference sample." App.
Br. 12.
We disagree. Shakespeare expressly describes replacing one or more
standard samples for calibration. Shakespeare i-f 51; Ans. 7. The Examiner
relies on Chuck, Mark, and Smith combined, not Shakespeare, for the
limitations related to detection of an analyte on a specimen. One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Appellants' arguments are, therefore, unpersuasive.
Accordingly, for the reasons discussed above and by the Examiner,
claims 6, 8, 22 and 23 are unpatentable over the cited combination of prior
art.
THE OBVIOUSNESS REJECTION BASED ON CHUCK, MARK, SMITH, AND XIAO
Claims 11, 12, and 25
Appellants assert there is no motivation or suggestion to combine
Xiao with Chuck, Mark, and Smith and that the Examiner relies on
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impermissible hindsight. App. Br. 12. Appellants' blanket assertions,
without sufficient support or reasoning, is unpersuasive. See also Ans. 7-8
(explaining that it would have been obvious to include Xiao' s teaching of
"generating a signal indicative of the presence/absent of contaminants if a
fluorescent light signal is greater/lower than a threshold" and displaying the
indicator for the "benefit of increasing safety").
Accordingly, for the reasons discussed above and by the Examiner,
claims 11, 12, and 25 are unpatentable over the cited combination of prior
art.
CONCLUSION
The Examiner did not err in rejecting claims 1---6, 8, 10-13, 15-23, 25,
27 and 29 under§ 103(a), but did err in rejecting claim 14.
DECISION
We affirm the Examiner's decision to reject claims 1---6, 8, 10-13, 15-
23, 25, 27 and 29 and reverse the Examiner's decision to reject claim 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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